When filing a trademark application in Canada, a “Filing Basis” must be selected. You can select from three possible options:

1. “Use in Commerce” basis

If you are currently using your trademark in Canada, we can file your application on a “Use in Commerce” basis.

In this case, you will need to provide the date of first use in commerce in Canada for each of the products and/or services included in the application. The date of first use must be before the filing date.

2. “Proposed Use” basis

If you are not using your trademark in Canada, we can still file your application on a “Proposed Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 12 months after the filing date), you must provide the date of first use in commerce in Canada for each of the products and/or services included in the application, when paying the registration fees (Step 3 – Trademark Registration Certificate).

The trademark certificate will be issued only for the products and/or services for which a Declaration of Use is filed.

Note: If you are not using your trademark before the Step 3 deadline (within three years from the date of filing or six months from the date of the notice of allowance) or if you have not started to use the trademark in relation to all the products and/or services included in the application, you can request an extension of time by paying an additional fee. You may also choose not to apply for an extension of time and have the trademark certificate issued only for the products and/or services that are already used in commerce in Canada and later file an application for amendment to extend the list of products and/or services.

3. “Foreign Registration” basis

If your trademark has been filed or registered in your country of origin, we can file your application in Canada on the basis of the “Foreign Registration” if the following conditions apply: your trademark is not similar and cannot be confused with another trademark already registered in Canada, it is not a prohibited trademark or contrary to morality or public order and it is not without distinctive character having regard to the circumstances including its use in any country. Additional fees have to be paid for the filing of foreign certificates.

How many applications should I file?

The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in Canada.

If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected,our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

In this case, proceeding with two trademark applications has the following advantages:

Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.

You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.

Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.

Is there a time frame for the trademark registration approval?

The average time frame for the registration approval is 12 months, if no objections or oppositions arise.

If I register my trademark in Canada, do I have protection in other territories?

No. Canada is the territorial limit (export from Canada included).

Do I need to sign a Power of Attorney?

Yes, a scanned Power of Attorney is required.

Are there any benefits from using the trademark before filing?

Yes, there are benefits.

Demonstrate distinction from other marks

Avoid opposition to your trademark on the grounds of non-descriptiveness and non-distinctiveness

Obtain common law rights by virtue of reputation which can be applied to any location where the mark is known to be in use

Will there be problems if I do not use my trademark after registration?

Yes. Your business competitors can attack your trademark on the basis of non-use. Non-use is a valid ground for cancellation.

What types of trademarks can be registered in Canada?

You may register words, devices, names, 3-dimensional shapes, sounds, slogans, motion, holograms, and trade dress. Colours are only registrable if these are applied to specific shapes.

What are the phases of application after a trademark has been filed in Canada?

The application will undergo several phases namely Publication, Examination, Prosecution, Opposition and Proof of Use.

Publication – The particulars of the application are made accessible to the public and online. Particulars include name and address of applicant, the actual mark, application date and number, priority claim, goods/services, date of first use and trademark representation.

Examination – Authorities will examine the applicant’s compliance to requirements. The mark will also be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, conflict with earlier application, and other criteria that may apply.

Prosecution –While the application is pending, the applicant obtains the right to use the home filing date for priority purposes.

Proof of use – It is not required in Australia to provide proof of use; however, if the application is Proposed Use, you have to file for a declaration of use.

What type of trademark is non-registrable?

You cannot register:

any generic name

signs that are in conflict with Canada’s moral standards

signs that may threaten public order

name of any international organization

flag of states or symbols of nations and regions

surnames

non-distinguishable marks

geographical names

deceptive names that may suggest a connection with a living person

portrait of a person who died within the last 30 years

signature of a person who died within the last 30 years

marks associated with a variety of plant (Plant Breeders' Rights Act)

marks that can be mistaken as similar-looking to any mark published in the Canadian Trademarks Journal

Does Canada use the "Nice Classification" system?

Yes, Canada uses it voluntarily and will be mandatory probably in year 2018.

Is there any possibility to claim priority in Canada?

Yes. If the home country of the applicant is a World Trade Organization member and/or Paris Convention member, the home filing date would be possible to claim.

What do I need to do to satisfy the use requirement?

You must prove that the mark was used within three years after registration. Minimal use is acceptable and usage must be done within jurisdiction. You can also justify non-use due to restrictions in importation of goods.

Once my trademark has been registered, for how many years will be valid?

The initial term is 15 years from the date of registration.

What will be the renewal date of my trademark?

Count 15 years from the date your trademark registration was granted.

Is it legal to use my trademark even if it is not yet registered?

Yes. It is legal to use an unregistered trademark for goods and services.